Fighting a Baseless Trademark Complaint on the Amazon PlatformCJ Rosenbaum
Amazon has finally adjusted their policies when it comes to Intellectual Property complaints. Until recently, Amazon would immediately suspend a seller’s listings, and sometimes accounts, once they receive an IP complaint. Amazon would not provide the accused seller the opportunity to defend himself or herself against the claim. For months, there has been an influx of baseless IP complaints made against some of our clients. Most of the complaints that were made were by competitors who were taking advantage of Amazon’s policies. The only way sellers could get reinstated was to negotiate removal of the complaint with the rights owner. However, the day has finally come where this injustice should no longer be a concern for the savvy seller. Amazon has started rolling out new emails that not only notify sellers of IP complaints, but actually give them the opportunity to fight back against a complaint they believe to be baseless. Let’s take a look at that email:
You currently may not sell on Amazon.com because of rights owner complaints about items that may be inauthentic … Funds in your seller account will not be available for disbursement while we work with you to address this issue. You have 90 days to appeal this decision. You can appeal in two ways: First, you can ask the rights owner to withdraw their complaint. Second, you can provide evidence that the items you sold are authentic. If you believe the rights owner reported in error because you can verify the authenticity of your items, reply to this email with the following information for each ASIN: (1) Copies of invoices or receipts from your supplier issued in the last 365 days. These should reflect your sales during that time; and (2) Contact information for you supplier, including name, phone number, address, and website. If we are unable to determine that the reported items are authentic, we will permanently hold funds from the sale of these items …
This is a ground-breaking opportunity for sellers, but having this opportunity to fight back is only half of the battle. Now that you as a seller have the opportunity to fight against these baseless complaints, it is imperative that you know how to communicate with Amazon, in a format that they are used to, and with accurate information that will be effective in getting you reinstated. Intellectual property law is vast and extremely complex; it almost always requires an attorney to handle any intellectual property issue.
Regardless of whether you retain an attorney to handle your issue (although you likely should), it is imperative to understand what Amazon wants and looks for when handling IP complaints. After all, sellers have been waiting years for this “gatekeeper” or “watch-dog” to appear, so why not do everything you can to make sure you seize this valuable moment.
In addition to contacting the rights owner who made a baseless complaint against your account, you can write to this so-called “gatekeeper” at a brand new Amazon email explaining that the complaint is baseless, why, and provide Amazon with evidence that your product does not infringe any rights. Sounds simple, right? For those of you who don’t think so, let’s dig deeper and take a look at what the Amazon Seller’s Lawyer recommends communicating to Amazon in this email.
Step 1 – Start Simple – Tell Amazon What a Trademark is:
A trademark is “any word, name, symbol, or design, or any combination thereof, used in commerce to identify and distinguish the goods of one manufacturer or seller from those of another and to indicate the source of the goods.” 15 U.S.C § 1127. A trademark is always an adjective because it describes the product or service at issue. A trademark is perpetual and can never be generic. A trademark is usually non-functional, meaning it does not influence the way the product works.
Trademark law serves two purposes, to protect consumers and to protect property. Trademark law is intended to ensure that consumers are fully informed, they get what they expect, and they are not misled or confused as to the origin or quality of the products they purchase.
Trademark law is also intended to protect the intellectual property rights of the trademark owner, who has invested time and money developing the goodwill and reputation of its trademark. For example, the Nike swoosh, the M in McDonald’s, the way that Gucci writes is Gs, Apple’s picture of an apple with a bite taken out of it … these are all valid trademarks. As soon as you see the Apple, you know who made that product and you expect a certain quality. On the other hand, generic words, pictures of items that occur and exist in nature are not trademarks. Descriptive marks are not typically protected as well unless the mark has secondary meaning. An example of a descriptive mark would be a picture of a banana for a company that sells bananas. What is secondary meaning? Think of it as your mark’s reputation. Over the years you have developed your brand and your company so much that whenever anyone sees your mark, they know it identifies your company.
Step 2 – No Trademark Violation and Why:
Now that you have identified that you are dealing with a Trademark complaint and outlined basic Trademark law, it is time to roll up your sleeves and dive into the legal side of fighting against your baseless complaint. Start simply by stating that you are not violating any intellectual property rights.
Next, you will need to explain, in a clear, organized, and convincing style why you are not violating the trademark. Every situation is different, and what you write in this part of the email depends almost entirely on the facts and circumstances surrounding your product and your business. Luckily for you, the complaint made against you is baseless, so the facts are on your side. Your goal should be to show Amazon that the accused ASIN does not cause consumers confusion as to the source of the product. This is where a seasoned attorney’s experience can prove to be invaluable. Practicing trademark law requires knowledge of all the different types of trademarks that exist because different trademarks come with different legal protections. What makes trademark law even more complicated is that different courts around the country (or different jurisdictions)vary in how they apply the rules of trademark law in various settings. An experienced lawyer’s knowledge and experience with certain jurisdictions will not only help expedite the process of defending yourself but also arm you with a legal team that is able to quickly identify why your product does not violate trademark law in your jurisdiction and anticipate your adversaries’ response.
This “gatekeeper” concept is brand new. This is the first time Amazon has provided any type of hope for the sellers who become victims of baseless complaints. It is revolutionary. Remaining a top competitor on the Amazon platform requires more than just selling a popular product, it requires playing by the rules and avoiding suspensions. Amazon’s new email account gives a glimmer of hope to all sellers that their voices have finally been heard. Amazon has finally provided an outlet for sellers to fight back against baseless complaints, and it is way overdue. By showing those who file baseless complaints that there is now a route to reinstatement that doesn’t involve negotiating with a complainant, we may ultimately be able to eliminate this problem entirely.
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